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GATT: Impacts on the U.S. patent law

GATT: Impacts on the U.S. patent law

By now, you are inundated with the effects of GATT on United States Intellectual Property Law. Specifically regarding U.S. patent law, major repercussions are:

  • The conversion of the U.S. patent term from 17 years from issue to 20 years from filing.

  • The introduction of the provisional specification into U.S. patent law and practice.

  • Minimization of the impact of the U.S. patent continuation practice.

  • Recognition of inventive acts outside the U.S. boundaries.

  • Acknowledgement that June 8, 1995 was an important date.

GATT has also influenced copyright and trademark law, but in the U.S., the changes are not as significant as those with patent law.

Patent considerations. Two bills pending in the Congress (HR 359 and S 284) modify the impact of the 20-year-from-filing rule and the U.S. continuation application practice.

Impetus for the 20-year rule comes partly from an effort to harmonize terms of U.S. patents with those used elsewhere in the world. But, another reason for its development is to eliminate the "submarine patent,'' or the late-issuing patent, that could result from the U.S. practice.

The U.S. continuation practice permits a series of U.S. patent applications, or continuations, to be filed, possibly delaying issuance of a final patent, with the term calculated from issuance.

The bills provide for a patent either 20 years after filing, or 17 years after issue, whichever is longer.

In the event of continuing applications, the bills also address the "submarine patent" by providing for a publication of the corresponding patent applications after five years of pendency.

The bills would move the U.S. toward its pre-GATT patent practice, and they have substantial support. The House bill has more than 125 sponsors, and the Senate bill has the support of its leadership.

Harmonization issues. Other matters include a possible provision for publication of a patent application 18 months from relevant filing. This would replace U.S. secrecy practice (which is consistent with U.S. trade secret law), but render its patent law consistent with non-U.S. practices. Also, the U.S. may adopt "prior user" rights.

The U.S. first-to-invent and grace-period concepts are not changing at this time.

Harmonization of U.S. patent law with that of the rest of the world (which was defeated as a package) may materialize on a bit-by-bit basis via GATT and other legislation.

However, because U.S. philosophy, economy, policies, and intellectual-property law are based on individualism, a piece-by-piece approach is unsuitable. Why introduce elements of another philosophy when the current system has worked for over 150 years, especially when the results are uncertain?

Prior failures of harmonization attempts answer this question. Bit-by-bit harmonization appears to be incompatible with basic tenants of U.S. philosophy.


Legal Questions

Q: Will GATT make U.S. Intellectual Property Laws similar to those in other countries?

A: Yes. The U.S. has adopted some non-U.S. elements into its patent system. But, some aspects have remained the same and unique to the U.S.

Q: What is an important underlying philosophical difference between U.S. and non-U.S. Intellectual Property Laws?

A: The U.S. laws are based upon short-term individual reward in return for prompt disclosure and long-term public benefit. Non-U.S. laws are based on early disclosure (not necessarily individual benefit) as a short- and long-term benefit to society.

Q: On what basis can one draw any conclusion regarding the effectiveness of the respective systems?

A: The U.S. laws have rewarded inventors for over 150 years and contributed to a strong economy. The non-U.S. laws have been in effect for less time, do not show as many significant inventions as U.S. laws, and the resulting economies do not appear stronger than or have the depth of those in the U.S.

Q: But, can't the United States system be improved?

A: We must consider suggestions for improvement. But, if we can't prove they will have positive results, I think we should evaluate the suggestions on the harm they could cause.

Q: Aren't new ideas useful in the U.S. system?

A: Of course, but to simply engraft bits and pieces from one system to another could be counterproductive.

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